Tuesday August 17, 2010

To determine if obviousness-type double patenting is present one must determine if any claim in the application at issue defines merely an obvious variation of an invention disclosed and claimed in the cited patents. In re Vogel, 422 F.2d 438, 441-42 (CCPA 1970). The disclosure of a reference patent may not be used as prior art; in certain situations, however, it may be used to define terms in claim and to determine whether an embodiment claimed was modified in an obvious manner. Carman Indus., Inc. v. Wahl, 724 F.2d 932, 940 (Fed. Cir. 1983). Obviousness-type double patenting entails a two-step analysis. First, the allegedly conflicting claims are construed and, second, the difference(s) between the claims are considered to determine whether the claims are patentably distinct. See Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 968 (Fed. Cir. 2001). “A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim.” Id. Because nonstatutory double patenting compares earlier and later claims, an earlier patent’s disclosure is not available to show nonstatutory double patenting. See Gen. Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1281-82 (Fed. Cir. 1992).